Custom Adhesive Products LLC

Patent Trials and Appeals Board

Sep 22, 2021

2020005037 (P.T.A.B. Sep. 22, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/826,397 11/29/2017 Todd Lyal Manteufel 023132-0014 4248
22922 7590 09/22/2021
REINHART BOERNER VAN DEUREN S.C.
ATTN: TRAVIS MCDONNELL, PARALEGAL
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/22/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPAdmin@reinhartlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD LYAL MANTEUFEL,
STEPHEN CHRISTOPHER BLACKOWICZ, and
JASMINA M. KECINSKA

Appeal 2020-005037
Application 15/826,397
Technology Center 1700
____________

Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Custom Adhesive Products LLC.
Appeal Br. 1.
Appeal 2020-005037
Application 15/826,397

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Appellant’s invention is directed to a splittable splice tape having two
internal layers (12, 14) that are bonded to one another where the level of
bonding along this interface is low enough that it forms a splittable interface
located between the two internal support layers (Spec. ¶ 14; Fig. 2).
Claim 1 is representative of the subject matter on appeal:
1. A splittable splice tape comprising:
a first internal support layer including a first polymer
material, an outer major surface and an inner major surface;
a first adhesive layer directly bonded to the outer major
surface of the first internal support layer;
a second internal support layer including a second
polymer material, an outer major surface and an inner major
surf ace, wherein the inner major surface of the second internal
support layer is directly bonded to the inner major surface of
the first internal support layer defining an interface between the
first and second internal support layers;
an anti-adhesion material dispersed within the second
polymer material of the second internal support layer, at least
some of which is located adjacent the interface; and
a second adhesive layer directly bonded to the outer
major surface of the second internal support layer;
wherein second polymer material is different from the
first material and the second polymer material is a cross-linked
polymer material;
wherein the anti-adhesion material decreases bonding
between the first polymer material and the second polymer
material such that a bond strength between first internal support
layer and the second internal support layer along the interface is
less than a bond strength between second internal support layer
and the second adhesive layer such that upon application of a
force away from the interface the splice tape separates in two
portions along the interface.

Appeal 2020-005037
Application 15/826,397

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Appellant appeals the following rejection:
Claims 1–122 are rejected under 35 U.S.C. § 103 as unpatentable over
Congard (US 6,432,241 B1; iss. Aug. 13, 2002) in view of Fang (US
6,964,989 B1; iss. Nov. 15, 2005).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding claim 1 and
Congard and Fang are located on pages 2 to 4 of the Final Action. The
Examiner finds Congard teaches a splicing tape as recited in claim 1 except
that the non-tacky polymer layer 14 (i.e., second internal support) is not
described as crosslinked and does not have anti-adhesion material dispersed
therein as recited in claim 1 (Final Act. 2–3). The Examiner finds Fang
discloses a peelable coating composition which forms a protective and/or
decorative coating on a variety of substrates (Final Act. 3). The Examiner
finds Fang teaches that the coatings may be easily removed without altering
the surface (Final Act. 3). The Examiner concludes it would have been
obvious to use Fang’s easily peelable coating composition to form the non-
tacky polymer layer 14 of Congard’s splicing tape (Final Act. 3–4). The
Examiner finds the collective teachings of the prior art render all the features
of the claimed invention obvious (Final Act. 4). The Examiner cites to KSR
Int’l Co. v. Teleflex Inc. and reasons that if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize

2 The Examiner incorrectly lists claims “1-2” are under rejection in the
statement of rejection (Final Act. 2). However, this mistake is considered
harmless error because the body of the rejection includes analysis regarding
all the pending claims (Final Act. 2-5).
Appeal 2020-005037
Application 15/826,397

4
that it would improve similar devices in the same way, using the technique is
obvious unless its actual use is beyond his or her skill (Final Act. 4). The
Examiner further finds that Congard and Fang relate to the same technical
field of forming a peelable (splittable) non-tacky polymer layer over a
carrier (substrate) layer with a desirable bonding strength (adhesion)
between them (Ans. 6).
Appellant argues, inter alia, the Examiner fails to identify any
motivation or suggestion for a person of ordinary skill in the art to modify
Congard according to Fang’s disclosure (Appeal Br. 5, 6). Appellant argues
that the Examiner fails to identify any reason a person having ordinary skill
in the art would perform the modification of Congard’s non-tacky layer 14
with Fang’s peelable layer (Reply Br. 2). Appellant contends the mere fact
that the references are in the same field is not sufficient to demonstrate that a
person having ordinary skill in the art would have combined the references
as suggested by the Examiner (Reply Br. 2).
Congard is directed to a splicing tape (col. 1, ll. 8–12). Fang is
directed to water resistant peelable protective coating compositions which
form a protective and/or decorative coating on a variety of substrates (col. 1,
ll. 12–19). The Examiner’s rejection does not explain why a person of
ordinary skill in the art would have looked to Fang’s protective/decorative
coating for a composition to use in Congard’s non-tacky polymer layer 14 of
a splice tape (Final Act. 3). Although the Examiner states that Congard and
Fang are from the same technical field, the teachings and use of the films
seem to be quite different (i.e., a splicing tape and a protective/decorative
film for substrates such as automobiles). Nevertheless, even if Congard and
Fang are understood to be from the same technical field, that, alone, is not
Appeal 2020-005037
Application 15/826,397

5
sufficient to establish a reason for the modification. The Examiner’s
reasoning for making the modification appears to be based upon using the
same technique to improve different devices in the same way (Final Act. 4).
Missing from the Examiner’s analysis is an explanation of what is exactly
Fang’s technique and how it would have improved Congard’s tape. The
Examiner has not explained sufficiently why a person of ordinary skill
would have looked to Fang’s protective/decorative peelable coating as a
basis for modifying the non-tacky polymer layer in Congard’s splice tape
that is not used for either protective or decorative purposes. As
acknowledged by the Court in KSR when the invention consists of
combining two known devices according to their established functions, “it
can be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 US 398,
418 (2007). In the absence of the Examiner’s elucidation of reasoning with
rational underpinnings for the substitution of Fang’s layer into Congard’s
tape, we are left with impermissible hindsight as the apparent reason for the
substitution. The Examiner provides no analysis regarding whether there
would have been a reasonable expectation that using Fang’s peelable
protective coating as the non-tacky layer 14 in Congard would have worked
as a splice tape.
On this record, we reverse the Examiner’s § 103 rejection of claims
1–12 over Congard and Fang as failing to establish a prima facie case of
obviousness.

DECISION
Appeal 2020-005037
Application 15/826,397

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In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 103 Congard, Fang 1–12

REVERSED